Trademark law interview: How do I go about protecting a form of packaging?

A fight’s afoot in the packaging sector. No question about it: manufacturers of packaging and also manufacturers of packaging machinery are brought before their competitors in courts of law at lightning speeds when it comes to competition law matters. When is it worth putting up a fight, and what should companies protect using trademarks?

We have discussed this and other queries on trademark law with Dr. Eckhard Ratjen, a certified IP lawyer. He is a consultant for and supports medium-sized and large international and national companies and start-ups with regard to all of their queries on intellectual property rights and copyright at the legal firm BOEHMERT & BOEHMERT. Dr. Eckhard Ratjen can be contacted for questions on these subjects at ratjen@boehmert.de.

First of all, companies are free to decide what they want to register as a trademark at the Trademark Office. The second question here is whether this is reasonable, and what enables the most success. The trademark does not always necessarily end up being registered, which means that trademark claims cannot always be derived against third parties. This subject is complex and legal battles can therefore be drawn out over many years, as we can see in the case of Milka vs. RITTERSPORT.

„The packaging of a product
can be protected as a trademark“,
Dr. Eckhard Ratjen of the legal firm
BOEHMERT & BOEHMERT

In the aforementioned case, a final ruling was reached by the Federal Court of Justice in Karlsruhe (BGH) after a nine year battle. Milka had already submitted claims to the German Patent and Trademark Office (DPMA) in 2011 in order to have two 3D trademarks which had been registered in the form of square packaging for chocolate bars deleted, and had, in the first instance, won the case before the German Federal Patent Court (BPatG). As the court of last resort, the BGH has now confirmed: the trademark on the square packaging will remain in force.

For the packaging industry, this decision is revelatory as it has now been established that product packaging can feasibly be protected as a trademark.

No, we shouldn’t get confused here. A trademark has to fulfil specific protection criteria. The packaging can only be protected as a 3D trademark if the packaging does not have any significant usage property that is inherent to the specific functions of that article. The only distinguishing feature in the case of RITTERSPORT is its square packaging. This does not give the article any intrinsic value. It is neither particularly artistic, nor does it elicit any significant difference in price when checked against other comparable products. A bottle explicitly designed as a special edition by a designer, for example, could hardly be protected under a trademark. This is because we assume that the customer purchases the product for the packaging.

To register a 3D trademark, it is often also required that the entity registering it proves that the form of packaging has gained market acceptance. This means that the market’s level of awareness of the product is the deciding factor. This process is time consuming and generally involves an expert opinion on market acceptance that certifies that the packaging has a high recognition value. It is my opinion that the patent office has become far stricter over the past few years when it comes to granting trademarks for shapes. For example, if you design a new oval packaging and put it on the market, and you want to secure this packaging shape as a trademark, then it will in all likelihood not get past the patent office unless an expert opinion is submitted proving that the packaging design is sufficiently known on the market.

Not exactly. In actuality, trademarking places increased requirements on protection of the packaging shape. However, many things can be protected and they can all be protected in different ways. Whatever the article shape, packaging shape or packaging design being protected, the registered design trademark (design trademark) should be given particular consideration in the packaging industry, in addition to the trademark (3D trademark, colour trademark, figurative mark etc.).

„Companies should ensure that they have built a foundation of legal protection when introducing new products, and should have this in place in good time before the market launch", 
Dr. Eckhard Ratjen

We thus make this recommendation to our clients: Get the packaging design protected first, via the design, for example. Subsequently, optimise the level of protection gradually. This also depends how much finance is available for this. Registering a 3D trademark is not only time-consuming and sometimes difficult, it also involves high costs. Expenses for getting a product protected as a 3D trademark, when it involves obtaining an expert opinion on market acceptance, can quickly amount to around 20,000 to 30,000 Euro to have the trademark protected in Germany alone. On the other hand, the investment involved in obtaining a sufficient design trademark are far below this. Another factor here is that one rarely knows how a product will develop when the product is introduced. In any case, companies should ensure that they have built a foundation of legal protection when introducing new products, and should have this in place in good time before the market launch.

TO WHAT EXTENT DOES SECURING VIA A LEGAL TRADEMARK PROTECT A PRODUCT? 

A broad intellectual property portfolio acts as a deterrent, and intellectual property rights are there in order to prevent legal disputes from occurring in the first place, ideally. If a competitor does infringe upon your intellectual property rights, you also need to assert your rights, as otherwise the brand is weakened. Cases such as that of True Fruits, in which the company used lettering which was based on the Coca-Cola font for their special edition for a campaign that was intended to be satirical, can prove expensive and are not without risk. This was a clear infringement of intellectual property rights. Cases such as these can result in warnings and legal proceedings which can also rapidly give rise to significant compensation cost and damage compensation claims from the copyright holder. Infringing upon industrial property rights is also significant in terms of the penal code.

Naturally, cases like these - both desired and undesired - occur again and again and generally provoke media awareness of the brand. Infringement is particularly frequent in the food sector. For example, discounters often stock no-name products whose product presentation is clearly based on another archetypal product. The high level of brand awareness of the original product is exploited in order to attempt to sell more of the knock-off products. For many, this is ultimately a business calculation: If the product revenue is high enough, this offsets any legal costs - let’s call this loss-free.